Patent Basics 101

Michael C. Greenbaum
Blank Rome LLP
The Watergate
600 New Hampshire Avenue, N.W.
Washington, D.C. 20037
Phone: (202) 772-5836
Email: greenbaum@blankrome.com

Presented to University of Rochester

Medical Center
January 12, 2006
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 Basis for Patent Rights
• United States Constitution Article I, Section 8:

Congress has the power "To promote the

Progress of Science and Useful Arts, by
securing for limited Times to Authors and
Inventors the exclusive Right to their
respective Writings and Discoveries”

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 Legal Requirements for a
Patent
Must be Statutory Subject Matter

• A Process (method of doing something)

• A Machine (an apparatus used to do
something)
• An Article of Manufacture
• A Composition of Matter
• An Improvement on any of the above

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 Must be Novel
Invention must be novel (new) over the prior
art
• The claimed invention has not been disclosed in the “prior art”
(before the filing of the patent application)

• Identity between the claimed invention and the subject matter in

the prior art is required

• Prior Art
– Publicly accessible information captured in a form that can be found
by others in the field
– Information must be publicly accessible and the date of its
disclosure must be able to be proven

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 Must be Non-Obvious
• The invention must non-obvious/ involve an inventive
step
– Obviousness measures the difference between
what is in the prior art and what is claimed as the
invention
– The prior art must not suggest what is claimed as
the invention
– Critical inquiry is the claimed invention relative to
the prior art

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 Must be Useful
- The invention must have a “practical
utility” (real world use) or application
in any field of industry
- Abstract ideas, laws of nature and
unapplied concepts are not
patentable

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 Novelty Requirements
• In the United States, a patent is awarded to the first
person to invent
• An inventor cannot obtain a patent if the invention:
– Was known or used by others in the US; or
– Was patented or described in a printed publication
in the US or a foreign country
before the invention by the applicant

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 Novelty Requirements
(Cont.)
• There is an absolute bar to obtaining a patent if the
invention:
– Was patented or described in a printed publication
in the US or a foreign country; or
– Was in public use or on sale in the US more than
one year before the filing of a patent application
• The other requirements of novelty and non-
obviousness also apply.

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Disclosure Requirements for
a Patent
• The “quid pro quo” of the patent system is the early
disclosure of technical information in return for
exclusive rights for a limited time
• The purpose of the disclosure requirements is to put
the public in possession of the invention once the
patent expires

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Disclosure Requirements for
a Patent (Cont.)
• Enablement-requires that the disclosure enable a
person of ordinary skill in the art to reproduce and
make the invention
• Written Description-the patent application is viewed
as evidence of what the inventor “invented” as of the
filing date
• Best mode-what did the inventor believe to be the
best mode of practicing the invention-if any-at the
time the application was filed
• Subjective best mode-best mode is not objective, but
is subjective-what the inventor actually believed at
the time the application was filed

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 Disclosure Requirements for a
Patent – Written Description

• The specification of the patent application

must contain a written description of the
invention and of the manner and process of
making and using it in full, clear, concise and
exact terms so that any person skilled in the
art to which the invention pertains or is most
nearly connected is able to make and use the
invention
• The claims as-filed are considered part of the
specification
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 Disclosure Requirements for a
Patent –Enablement

• The patent specification must enable

one of ordinary skill in the art to practice
the patented invention

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 Patent Rights
• Inventorship

• Ownership

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 Determining Inventorship
• An inventor is someone who contributes
intellectually to the claimed invention
– To determine inventorship, you must first
determine what the invention is and then
determine who contributed to making it
– Often, inventorship is defined by negatives:
An inventor is not someone who merely
contributed non-inventive information. An
inventor is also not someone who simply
ran routine tests.
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 Record the Invention
• Keep contemporaneous notes of meetings,
telephone calls, lab work and other writings in
a bound notebook
• Have the pages of the lab notebook signed
and dated by someone who understands the
invention but is not a co-inventor
• Maintain records of slides and or disclosures
made in presentations and copies of reports

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 Patent Rights Conferred
• An issued patent grants the right to its owner to
prevent others from making, using, selling, offering
for sale or importing the patented invention in the
United States without authorization for a period of 20
years from the date of filing
• An issued patent does not guarantee the right to
practice the patented invention (can still be sued by
other patent holders for violating their patents)

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 Loss of Patent Rights
• Public Disclosure
• Written (Scientific Journal Articles, Abstracts,
Posters, Web sites (even if material is later removed),
Published or issued patents, Sales Literature, etc.
– Your own publication
– Publications of others (file early)
• Oral (Any oral disclosure not made under an NDA)
• To affect patentability, the disclosure must be
enabling (teach how to make and use the invention)
to the extent that it at least makes the invention
obvious
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 Loss of Patent Rights (Cont.)
• Public Use
– In the United States
– In Foreign Countries
• Offer for Sale/Sale
• Lack of Evidence of Invention

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 Loss of Patent Rights (Cont.)
• Grace Periods
– One year grace period in US for:
• Own publication
• Offer for sale
• Public use
– No grace period in foreign countries-
absolute novelty is required

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 Types of Patents
• Three basic types of patents:
– Utility: a new and useful invention, process,
design, or substance
– Design: a new and original ornamental
design for an article of manufacture
– Plant: A new and unique variety of plant

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 Types of US Patent
Applications
• Provisional
• Regular Utility
– Continuation
– Divisional
– Continuation-in-part

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 Foreign Applications (filed
through the PCT)

• International Stage
– International Search Report
– Written Opinion
• National Stage

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 Timing for Foreign Filing a US
Patent Application

• Regular Utility-have one year from US

filing date to foreign file
• Provisional-have one year to convert to
regular utility application and to foreign
file

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 Steps in the Patenting Process
• Invention/conception
– The formation in the mind of the inventor of a
definite and permanent idea of the complete and
operative invention as it is later to be applied in
practice
• Reduction to Practice
– Actual (make the invention and demonstrate that it
works for its intended purpose)
– Constructive (file patent application directed to the
invention)

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Steps in the Patenting Process
(Cont.)

• Determine the Scope of the Invention

• Determine Inventorship

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 Steps in the Patenting Process
(Cont.)
• File application
• File Information Disclosure Statement
• Publication of Application
• Receive Office Action
• Office Action contains rejections relating to one or
more of novelty, obviousness, utility, written
description, best mode, et.
• Prepare and file response to office action, either
amending claims of application or disputing position of
patent examiner
• Notice of Allowance
• Issuance of Patent
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Questions?

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